Last week, there was a very important (and favorable) ruling in the Uniloc case concerning 101/Obviousness. The following is a letter from our lead attorney, Lewis E. Hudnell III, regarding that case, and its relationship to the ruling(s) on 101 and Voip Pal...This is a promising development, as it pertains directly to the Voip-Pal case(s).
May 1, 2020
By CM/ECF
The Honorable Peter R. Marksteiner
Circuit Executive and Clerk of Court
United States Court of Appeals for the Federal Circuit
717 Madison Place, N.W.
Washington, D.C. 20439
Re: VoIP-Pal.com v. Twitter, Inc., No. 2019-1808 (Lead Case)
Dear Colonel Marksteiner,
VoIP-Pal submits this FRAP 28(j) letter to advise the Court of Uniloc USA, Inc. et al. v. LG Electronics USA Inc. et al., No. 2019-1835 (Fed. Cir. Apr. 30, 2020)
(“Uniloc”) (Ex. A) as supplemental authority, which was decided after VoIP-Pal filed its Combined Petition for Panel Rehearing and Rehearing En Banc.
As noted in VoIP-Pal’s Petition, Uniloc arose from the same district court judge as this case. Petition at 8. In Uniloc, the Court reversed the district court’s ruling at the Rule 12 stage that the appealed claims were ineligible under §101. Uniloc, Slip Op. at 2. Uniloc found that LG erred by arguing that “the claims themselves must expressly mention” the alleged benefit achieved by the claimed invention. Id. at 9-10.
Instead, the Court confirmed that “[c]laims need not articulate the advantages of the claimed combinations to be eligible.” Id. As argued in the Petition, the panel overlooked that the same district court committed the same error as LG in this case. Petition at 14-15. This error directly
resulted from Appellees’ repeated arguments to the district court that the asserted claims do not recite the benefits of user-specific calling and transparent routing. See Appx001607, Appx001611, Appx001617-001618; see also Response Br. at 12, 48.
Consequently, based on a perfunctory facial review of the asserted claims, the district court concluded that the claims do not mention the benefits achieved by the invention, stating “[t]he ’815 Patent’s claim language contains no mention of these alleged benefits of user-specific calling . . . .” and “[l]ike with user-specific calling, the concepts embodied by transparent routing appear nowhere in the claims.”
Case: 19-1808 Document: 97-1 Page: 1 Filed: 05/01/2020 (1 of 13)
Honorable Peter R. Marksteiner
May 1, 2020
Page 2 0f 2
Appx 000047-000048 (emphasis added). In reaching this conclusion, the district court disregarded claim language that VoIP-Pal plausibly alleged captured the inventive concepts of user-specific calling and transparent routing because these benefits are not expressly mentioned in the asserted claims. Petition at 15-16. The panel’s affirmance of the district court’s erroneous conclusion conflicts with the precedent set by Uniloc. For this reason and those stated in the Petition, the Court should grant the Petition and rehear this case.
Respectfully submitted,
Lewis E. Hudnell, III
Enclosure
cc: Counsel of Record (via ECF)
Case: 19-1808 Document: 97-1 Page: 2 Filed: 05/01/2020 (2 of 13)
